The Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.
The Respondent is Robert Kaufmen of Penza, Russian Federation. 2. The Domain Name and Registrar
The disputed domain name is registered with Regtime Ltd. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 14, 2013. On June 14, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 17, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details disclosing the contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 4, 2013.
On June 21, 2013, the Center sent an e-mail communication regarding the language of the proceedings. Complainant submitted its comments by e-mail on June 23, 2013.
The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 5, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 25, 2013. The Center received an online submission on July 25, 2013 from an entity other than the Respondent, Ilin. On July 26, 2013, the Center sent an email communication requesting Ilin to identify itself, explain their relationship (if any) to the Respondent, and provide information sufficient to establish the legitimacy of their request/submission in the context of the current proceedings. Neither further communication nor formal Response has been submitted.
The Center appointed Ladislav Jakl as the sole panelist in this matter on July 13, 2013. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
On the question of the language of the proceedings, the Registrar confirmed that the language of registration agreement is Russian. The Complainant submitted its comments by email on June 23, 2013 and presented a request for English to be the language of the proceedings in the Complaint. The Respondent did not provide any comments in this regard. According to paragraph 11(a) of the Rules the Panel has the authority to determine a different language other than the one in the registration agreement, having regard to the circumstances of the administrative proceeding. The Panel, taking into account the circumstances of this case, and a number of recent UDRP proceedings (Mammut Sports Group AG v. Deminzheng,WIPO Case No. D2011-0475; BrandStrategy, Inc. v. BusinessService Ltd.,WIPO Case No. D2007-0749; Laboratoire Biosthétique Kosmetik GmbH & Co. KG and MCE S.A.S. v. BusinessService Ltd.,WIPO Case No. D2007-1836) decides that the language of the administrative proceedings will be English. 4. Factual Background
The Complainant and its licensees (collectively “the LEGO Group of Companies or the LEGO Group”), through their predecessors, commenced use of the LEGO mark in the U.S. during 1953, to identify construction toys made and sold by them. Over the years, the business of making and selling LEGO branded toys has grown remarkably. By way of example, the revenue for the LEGO Group in 2009, was more than $2,8 billion. 2010 was another good year for the LEGO Group. Its global market share rose from 4.8% at the close of 2009 to approx. 5.9% at end 2010. The Complainant has subsidiaries and branches throughout the world, and LEGO products are sold in more than 130 countries, including in Russia.
In accordance with the Rules, paragraph 3(b)(viii) provided as Annex 6 to the Complaint, are lists of the registered trademark on which this Complaint is based. The Complainant, based in Denmark (Annex 7 to the Complaint) is the owner of LEGO and all other trademarks used in connection with the famous LEGO brands of construction toys and other “Lego” branded products. The Complainant's licensees are authorized to exploit the Complainant's intellectual property rights, including its trademark rights, in the Russian Federation and elsewhere. The Complainant also holds a national Russian trademark registration for LEGO which includes registration number 42932 registered as early as in 1971.
The mark LEGO is in possession of substantial inherent and acquired distinctiveness. The awareness of the trademark LEGO is considered in the whole Community to be significant. According to the provisions of Article 6bis of the Paris Convention for protection of Industrial Property, confirmed and extended by Article 16.2 and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”), the statute of a well-known trademark provides the owner of such a trademark with the right to prevent any use of the well-known trademark or a confusingly similar denomination in connection with any products or services (i.e. regardless of the list of the products and services for which the trademark is registered). Thus, the protection for LEGO goes far beyond toys and goods similar to toys.
The Complainant is also the owner of more than 2,400 domain names containing the term LEGO (Annex 8 to the Complaint). It is the strict policy of the Complainant that all domain names containing the word LEGO should be owned by the Complainant. The trademark LEGO is among the best-known trademarks in the world, due in part to decades of extensive advertising, which prominently depicts the LEGO mark on all products, packaging, displays, advertising, and promotional materials. Indeed, the LEGO trademark and brand have been recognized as being famous. For instance, attached hereto as Annex 9 to the Complaint, is a list of the official top 500 Superbrands for 2009/10, provided by Superbrands UK, showing LEGO as number 8 of the most famous trademarks and brands in the world. The LEGO Group has expanded its use of the LEGO trademark to, inter alia, computer hardware and software, books, videos and computer controlled robotic construction sets. The LEGO Group also maintains an extensive web site under the domain name (see Annex 10 to the Complaint).
The disputed domain name was registered on April 24, 2013. 5. Parties’ Contentions A. Complainant
The Complainant contends that the dominant part of the disputed domain name comprises the word LEGO, which is identical to the registered trademark LEGO, which has been registered by the Complainant as trademarks in numerous countries all over the world. The Complainant further argues that disputed domain name is confusingly similar to the Complainant’s world famous trademark LEGO. The fame of the trademark has been confirmed in numerous previous UDRP decisions (LEGO Juris A/S v. Rampe Purda,WIPO Case No. D2010-0840) and that LEGO is clearly a well-known mark (LEGO Juris A/S v. Domain Administrator,WIPO Case No. D2010-1260). In the present case, the disputed domain name incorporates the Complainant’s well-known registered trademark LEGO (LEGO Juris A/S v. Reginald Hastings Jr.,WIPO Case No. D2009-0680) and that LEGO is a mark enjoying high reputation as construction toys popular with children. The Complainant introduces that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it is confusingly similar to that mark despite the addition of a word or, in this case, an obvious contraction of a descriptive word. The same argumentation should be applied in the current case. The addition of the top-level domain “.com” does not have any impact on the overall impression of the dominant portion of the disputed domain name and is therefore irrelevant to determine the confusing similarity between the trademark and the disputed domain name and that anyone who sees the disputed domain name is bound to mistake them for names related to the Complainant. The likelihood of confusion includes an obvious association with the trademark of the Complainant. With reference to the reputation of the Complainant’s trademark LEGO, there is a considerable risk that the trade public will perceive the Respondent´s disputed domain name either as a domain name owned by the Complainant or that there is some kind of commercial relation with the Complainant. By using the trademark LEGO as a dominant part of the disputed domain name, the Respondent exploits the goodwill and the image of this trademark. The Complainant concludes that the domain name in question is clearly confusingly similar to the Complainant’s registered trademark LEGO.
As to rights or legitimate interests in respect of the disputed domain name, the Complainant especially introduces that he has not found that the Respondent has any registered trademarks or trade names corresponding to the disputed domain name. The Complainant has also not found anything that would suggest that the Respondent has been using “Lego” in any other way that would give them any legitimate rights in the names and consequently the Respondent may not claim any rights established by common usage. According to Complainant´s meaning, it is also clear that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO. The Complainant refers to the WIPO decision Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055, where the panel stated that “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent.” Moreover the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of non-legitimate interest with the Respondent (Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312). The Respondent registered the disputed domain name on April 24, 2013 and a mere registration of a domain name does not give the owner a right or a legitimate interest in respect of the domain name. Moreover the Complainant contends that the Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services and that instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a commercial site, where LEGO products are sold. Further, same circumstances are at hand in the present case, that the Respondent has not accurately disclosed the relationship with the trademark owner, nor does it state that it is an affiliate or sales agent. Referring to the above mentioned, the Complainant concludes that the Respondent has no rights or legitimate interest in respect of the disputed domain name. The fact that the Respondent did not respond to a cease and desist letter of the Complainant is considered relevant in a finding of bad faith (NewsGroup Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc.v. Antonio R. Diaz, WIPO Case No. D2000-1460).
As to the question that the disputed domain name was registered and is being used in bad faith, the Complainant introduces that the trademark LEGO, in respect of toys belonging to the Complainant, has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the whole Community and throughout the world. The awareness of the trademark LEGO is considered, in the whole Community in general, to be significant and substantial. The Complainant first tried to contact the Respondent on May 13, 2013 and advised the Respondent that the unauthorized use of the LEGO trademark in the disputed domain name violated the rights in the trademark LEGO, owned by the Complainant. The Complainant requested the immediate transfer of this domain name and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses). No reply was received. Since the efforts of trying to solve the matter amicably were unsuccessful, the Complainant chose to file a complaint according to the UDRP process. The Complainant introduces that it has been mentioned in earlier disputes that the failure of a Respondent to respond to a cease and desist letter, or a similar attempt at contact, has been considered relevant in a finding of bad faith (NewsGroup Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc.v. Antonio R. Diaz, WIPO Case No. D2000-1460). Moreover, the Respondent has chosen the disputed domain name based on a registered trademark LEGO in order to generate traffic to their website where LEGO products are sold. Consequently, according to Complainant´s opinion the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. No disclaimer has been added to explain the non-existing relationship with the Complainant. Although the website itself does not offer goods for sale, but re-directs customers where the Respondent may obtain revenue from a click through advertising is not necessary to show he is using the disputed domain name in bad faith, but where the use is extended to a domain name which is confusingly similar to the Complainant´s trademark, such use will constitute bad use when it is made to intentionally attempt, for commercial gain, to divert internet traffic to its website. Whether or not the Respondent is the one getting revenue from the products being sold at the website is irrelevant for the finding of bad faith in this case (Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912).
The Complainant argues that it is highly unlikely that the Respondent was not aware of the rights the Complainant has in the trademark and the value of said trademark, at the point of the registration. There is no connection between the Respondent and the Complainant. By using the disputed domain name the Respondent is not making a legitimate non-commercial or fair use without intent for commercial gain but is misleadingly diverting consumers for his own commercial gain. Consequently, by referring to the above-mentioned, the Respondent should be considered to have registered and to be using the disputed domain name in bad faith.
In accordance with Paragraph 4(i) of the Policy, for the described reasons, the Complainant requests the Administrative Panel, appointed in this administrative proceeding, that the disputed domain names be transferred to the Complainant. B. Respondent
The Center received an online submission of July 25, 2013 from an entity other than the Respondent As such the sending party, Ilin, requested to identify itself, explain it‘s relationship (if any) to the Respondent, and provide information sufficient to establish the legitimacy of it‘s request/submission in the context of the current proceedings. Neither further communication nor formal Response has been submitted.
Therefore the Panel states that the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name have been registered and is being used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving that all three elements are present lies with the Complainant. A. Identical or Confusingly Similar
There is no doubt to this Panel, that the disputed domain name incorporates the Complainant's trademark LEGO in its entirety and that the addition of the generic term “boom” does not sufficiently distinguish the disputed domain name from the trademark of the Complainant (Lilly ICOS LLC v. John Hopking/Neo net Ltd.,WIPO Case No. D2005-0694). The inclusion of the gTLD suffix “.com” may be disregarded when comparing a domain name to a complainant’s mark. (AT&T Corp. v. William Gormally, WIPO Case No. D2005-0758; Accor v. Lee Dong Youn, WIPO Case No. D2008-0705; and Sanofi-Aventis v. Brad Hedlund,WIPO Case No. D2007-1310).
For all the above cited reasons, the Panel concludes that disputed domain name is confusingly similar to the Complainant’s trademark LEGO in which the Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled. B. Rights or Legitimate Interests
As to rights or legitimate interests in respect of the disputed domain name, the Panel accepts the arguments of the Complainant that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark LEGO and that in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent (Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). In this case, as the Respondent is not an authorized dealer of the Complainant’s products and has never had a business relationship with the Complainant, this is a factor in the finding of non legitimate interest with the Respondent (Dr. Ing. h.c. F. Porsche AG v. Ron Anderson,WIPO Case No. D2004-0312). The Panel accepts the argument of the Complainant that the Respondent is today not using the disputed domain name in connection with a bona fide offering of goods or services and that instead the Respondent has intentionally chosen a domain name based on a registered trademark in order to generate traffic to a commercial site, where LEGO products are sold.
For the above cited reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the requirements of paragraph 4(a)(ii) of the Policy are therefore fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) sets out certain circumstances which, in particular but without limitation, are to be construed as evidence of both. These include, inter alia, paragraphs 4(b)(ii), (iii) and (iv):
(ii) the Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of his website or of a product or service on that website or location.
The Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent knew or should have known of the Complainant’s trademark LEGO at the time he registered the disputed domain name on April 24, 2013. Undoubtedly the Complainant´s trademark LEGO, in respect of toys belonging to the Complainant, has the status of a well-known and reputed trademark with a substantial and widespread reputation throughout the world. In such a way the Respondent has registered the disputed domain name in order to prevent the Complainant, owner of the trademark from reflecting his mark in a corresponding domain name. The fact that the Respondent did not answered to a cease letter, requested the immediate transfer of this domain name and offered compensation for the expenses of registration and renewal fees (not exceeding out of pocket expenses), is considered relevant in a finding of bad faith (NewsGroup Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc.v. Antonio R. Diaz.WIPO Case No. D2000-1460). is considered relevant in a finding of bad faith (NewsGroup Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598 and America Online, Inc.v. Antonio R. Diaz, WIPO Case No. D2000-1460).
The Complainant has proved that the Respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website and that no disclaimer has been added to explain the non-existing relationship with the Complainant. Although the website itself does not offer goods for sale, it re-directs customers where the Respondent may obtain revenue from a click through advertising in bad faith. Where the use is extended to a domain name which is confusingly similar to the Complainant’s trademark, such use will constitute bad use when it is made to intentionally attempt, for commercial gain, to divert internet traffic to its website. Whether or not the Respondent is the one getting revenue from the products being sold at the website is irrelevant for the finding of bad faith in this case (Pfizer Inc. v. jg a/k/a JoshGreen, WIPO Case No. D2004-0784; F. Hoffmann-La Roche AG v. Pinetree Development, Ltd., WIPO Case No. D2006-0049 and Villeroy & Boch AG v. Mario Pingerna, WIPO Case No.D2007-1912).
For the above cited reasons the Panel finds that the disputed domain name was registered and is being used in bad faith. Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Ladislav Jakl
Sole Panelist
Date: August 21, 2013
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